Business brief: Finland 2014
Patents
How do you register or secure patent rights?
A Finnish national patent can be applied for at the National Board of Patents and Registration (NBPR). The application must be in writing and all the relevant forms can be found on NBPR’s website (www.prh.fi). The application may be drafted in Finnish, Swedish or English. It may also be filed in another language, but a translation into one of the three mentioned languages has to be submitted for the application to be examined. If the applicant wishes to receive the NBPR decision in English, it should be mentioned in the application. The claims and an abstract must be submitted to NBPR in Finnish before the application is made available to the public.
In respect of international patent applications, Finland is party to the Patent Cooperation Treaty, and a single application for protection in several territories can be filed at WIPO or EPO, but also at the NBPR. Furthermore, it is possible to file for a European patent, consisting of a bundle of national patents, under the 1973 European Patent Convention.
A reform of the patent regime within the EU is currently under process, introducing two major changes: a Unitary Patent and a Unified Patent Court. The Unitary Patent is complementary to the national patent and also to the current European patent.
What are the costs for registering a patent?
The cost for filing a national patent is €350 if it is done electronically, otherwise €450. The fee for each patent claim exceeding the first ten claims is €40. The patent is maintained by paying renewal fees. For the first three years, the fee is €200 and from there on, there is an annual fee, starting from €155 and increasing progressively up to €900 in the 20th year.
Where can you find information on existing patents in your jurisdiction?
Information on existing patents can be found in the Finnish online database PatInfo and in the global online database Espacenet. Also, the FI-EP Register provides basic data on European patents currently in force in Finland. All three databases can be reached through NBPR’s website.
Is there anything unusual about the patent law that companies should be aware of, and what are the most common mistakes businesses make?
Applicants should note that it is not possible to add anything to the application after it has been filed. Claims can, however, be modified while the application is being processed if the information required for the modification is found in either the description or the original claims of the application.
What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?
Patent litigation, especially within the technology industry, is not uncommon. If a patent holder suspects that a competitor is infringing its rights, a good way to start is to send a cease and desist letter. Interim injunctions, including ex parte injunctions, are also available.
In general, due to adequate legal protection and a well-functioning judicial system, right holders can expect their legal rights to be enforced in Finland.
Trademarks
How do you register or secure trademark rights, and what protection does it grant? Trademark protection can be obtained either through use or through registration at the NBPR. Of the two, registration is highly recommended. Applicants and trademark owners with no establishment in Finland should note that a local agent is required.
The exclusive trademark right covers the right to use the mark in the course of trade and the right to prohibit third parties from using a mark confusingly similar in relation to similar or identical goods without the right holder’s authorisation.
What are the costs for registering a trademark, and what are the costs of defending it?
The cost for filing a trademark application online is €215, otherwise €250. The fee includes one class of goods or services. A fee of €80 is charged per each additional class.
If a trademark owner suspects a third party trademark application to be infringing its rights, the application can be opposed for a fee of €215. In general, the costs for legal actions to defend a trademark in Finland are moderate compared to many other countries within Europe and the US.
What are the key threats to trademark owners, and what is the best strategy for dealing with infringement?
Counterfeiting continues to pose a serious threat to right holders, as is the increasing number of online infringements. Customs investigated 67 counterfeiting offences in 2013, compared to 63 in 2012. It uncovered 40 IP offences, of which 28 involved industrial property rights.
Customs plays a very active role in the implementation of border measures, education and raising awareness. Any party wishing to enforce its rights in Finland is advised to file a standing application for Customs surveillance. The new EU regulation concerning Customs enforcement of IP rights (608/2013) that came into force on January 1 2014 brings a number of changes, one of the most important for Finland being the introduction of a simplified destruction procedure of suspected infringing goods seized by Customs.
Besides Finnish Customs, local anticounterfeiting and anti-piracy groups are also a good first point of contact for trademark owners.
Have there been any changes to the trademarks law(s) in the last 12 months?
No changes have come into force in the past year, except for the changes subsequent to the extension of the Market Court’s scope of authority to hear all civil IP matters (see below).
An expert group set up by the Ministry of Employment and the Economy published its report in September 2012, suggesting changes to the Trademark Act so that it would be in line with the CJEU’s case law. Also, in 2013 the EU Commission made public its proposal regarding administrative, procedural and substantive legal changes to the EU trademark system. The proposal is still under process.
Copyright
What are the key challenges to copyright holders in your jurisdiction?
Online piracy is still a big problem for the music, film and publishing industries in Finland, whereas physical piracy is rather low. Illegal P2P services remain the main threat for the entertainment industries, while for brand owners, auction sites and illegal websites are the most common channels of distribution for illegal products.
What is the best way to deal with infringement?
Careful monitoring and sending cease and desist letters is a good starting point. Interim injunctions are also available.
The Finnish Copyright Information and Anti-Piracy Centre (CIAPC), representing key entertainment industry associations, runs an effective campaign against online infringement and also carries out enforcement actions on behalf of its individual members. As it plays a key role in the fight against piracy, we recommend liaising and coordinating with the CIAPC.
Have there been any changes to the copyright law(s) in the last 12 months?
In 2013 the EU directives 2011/77/EU on extension of term of protection and 2012/28/EU on permitted use of orphan works were implemented. One of the main changes due to directive 2011/77/EU is the extension of the term of protection for sound recordings from 50 to 70 years from the date of the first lawful publication or communication to the public. Directive 2012/28/EU was implemented as a separate act on orphan works, which will come into force in October 2014.
In October 2013 the Finnish government commissioned the Ministry of Education and Culture to amend the Copyright Act in accordance with the objectives set out in the government policy programme. The government’s assignment is set to culminate in a new government bill during spring 2014. The bill is likely to, at least, introduce (i) changes to the current procedure for website blocking orders; (ii) a new alternative tool to disrupt the operation of illegal websites (bandwidth throttling); (iii) a streamlined licensing process for online storage services for TV programmes (or Network Private Video Recording services); and (iv) changes to the rules governing agreements on transfer of copyright.
General
The Finnish Market Court started its operation as the new IP court on September 1, 2013. It has jurisdiction in all civil IP matters, including, for instance, applications related to IP rights and appeals against decisions by the NBPR regarding patents, trademarks and designs. The Board of Appeals of the NBPR ceased its operations on January 1, 2014 and its cases were transferred to the Market Court. Criminal proceedings will, however, continue to be heard in the local district courts.
Hanna Nylund is an associate at Procopé & Hornborg. She can be contacted at: hanna.nylund@procope.fi
Davide Battistelli is an associate at Procopé & Hornborg. He can be contacted at: davide.battistelli@procope.fi
